UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZTE (USA) Inc.,
`Samsung Electronics Co., Ltd.,
`Samsung Electronics America, Inc.,
`HTC Corporation, and
`HTC America, Inc.,
`
`Petitioner
`
`v.
`
`Evolved Wireless LLC,
`
`Patent Owner
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,746,916
`
`Case No. IPR2016-01280
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`

`
`IPR of U.S. Patent No. 7,746,916
`
`TABLE OF CONTENTS
`
`I.
`
`Mandatory Notices Under 37 C.F.R § 42.8(A)(1) ..........................................1
`A.
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)............................1
`B.
`Related Matters Under 37 C.F.R. § 42.8(b)(2) .....................................1
`C.
`Lead And Back-Up Counsel And Service Information ........................2
`Payment Of Fees – 37 C.F.R. § 42.103...........................................................2
`II.
`III. Requirements For IPR Under 37 C.F.R. § 42.104 ..........................................3
`A.
`Grounds for Standing Under 37 C.F.R. § 42.104(a).............................3
`B.
`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested............3
`C.
`Claim Construction under 37 C.F.R. §§ 42.104(b)(3) ..........................5
`1.
`“acquiring/generating a code sequence having a second
`length by a cyclic extension of a code sequence having a
`first length” (claims 1 and 6) ......................................................5
`“cyclic prefix” (claims 2 and 7)..................................................7
`2.
`“cyclic postfix” (claims 2, 3 and 7) ............................................8
`3.
`“reference signal sequence” (claims 5 and 10)...........................8
`4.
`“a code sequence generator” (claim 6) .......................................9
`5.
`“a transmitting unit” (claim 6) ..................................................11
`6.
`Summary Of The ‘916 Patent........................................................................12
`A.
`Brief Description .................................................................................12
`B.
`Summary of the Prosecution History ..................................................14
`C.
`The Effective Priority Date of the Claims of the ‘916 Patent.............15
`V. Manner Of Applying Cited Prior Art To Every Claim For Which An
`IPR Is Requested, Thus Establishing A Reasonable Likelihood That
`At Least One Claim Of The ‘916 Patent Is Unpatentable.............................15
`A.
`Ground 1: Zhuang175 anticipates claims 1-3, 5-8, and 10.................16
`1.
`Zhuang175 anticipates claim 1 .................................................19
`2.
`Zhuang175 anticipates claim 2 .................................................25
`3.
`Zhuang175 anticipates claim 3 .................................................26
`
`IV.
`
`i
`
`

`
`IPR of U.S. Patent No. 7,746,916
`
`B.
`
`C.
`
`Zhuang175 anticipates claim 5 .................................................27
`4.
`Zhuang175 anticipates claim 6 .................................................28
`5.
`Zhuang175 anticipates claim 7 .................................................35
`6.
`Zhuang175 anticipates claim 8 .................................................35
`7.
`Zhuang175 anticipates claim 10 ...............................................35
`8.
`Ground 2: Zhuang175 in view of Popovic renders claims 4 and
`9 obvious .............................................................................................35
`Ground 3: Zhuang175 in view of Hou renders claims 1-3, 5-8,
`and 10 obvious.....................................................................................40
`Ground 4: Zhuang175 in view of Hou and Popovic renders
`claims 4 and 9 obvious........................................................................51
`Ground 5: Zhuang175 in view of Fukuta renders claims 6-8 and
`10 obvious ...........................................................................................52
`Ground 6: Zhuang175 in view of Fukuta and Popovic renders
`claim 9 obvious ...................................................................................64
`VI. Redundancy ...................................................................................................65
`VII. Conclusion .....................................................................................................67
`
`D.
`
`E.
`
`F.
`
`ii
`
`

`
`Ex. 1001
`
`Ex. 1002
`
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`Ex. 1015
`
`IPR of U.S. Patent No. 7,746,916
`
`EXHIBITS
`
`U.S. Patent No. 7,746,916 to Han, et al. (“the ‘916 patent”)
`
`Excerpts from the Prosecution History of the ‘916 Patent (“the
`Prosecution History”)
`
`Declaration of Jonathan Wells
`
`Curriculum Vitae of Jonathan Wells
`
`Definitions of terms “acquire,” “generate” and “by” in
`American Heritage® Dictionary of the English Language,
`Fourth Edition, Copyright © 2000 by Houghton Mifflin
`Harcourt Publishing Company
`
`U.S. Patent No. 8,340,232 to Ding et al. (“Ding”)
`
`U.S. Patent No. 7,599,327 to Zhuang et al. (“Zhuang327”)
`
`[Reserved]
`
`Popovic, “Generalized chirp-like polyphase sequences with
`optimum correlation properties”, IEEE Trans. On Information
`Theory, vol. 38, pp. 1406-1409, July 1992 (“Popovic”)
`
`Declaration of Mr. Gerard Grenier re Popovic
`
`U.S. Patent No. 8,116,195 to Hou et al. (“Hou”)
`
`U.S. Patent No. 7,426,175 to Zhuang et al. (“Zhuang175”)
`
`U.S. Patent Publication No. 2007/0270273 to Fukuta et al.
`(“Fukuta”)
`
`Definitions of terms “circular shift” and “cyclic shift” in
`McGraw-Hill Dictionary of Scientific and Technical Terms, 6th
`Edition, Copyright © 2003
`
`Certified English Translation of Korean Application No. 10-
`2005-0114306 filed November 28, 2005 (Publication No. 10-
`2007-0055845)
`
`iii
`
`

`
`Ex. 1016
`
`Ex. 1017
`
`Ex. 1018
`
`Ex. 1019
`
`Ex. 1020
`
`Ex. 1021
`
`Ex. 1022
`
`Ex. 1023
`
`Ex. 1024
`
`IPR of U.S. Patent No. 7,746,916
`
`Certified English Translation of Korean application No. 10-
`2006-0062467 filed July 4, 2006 (Publication No. 10-2008-
`0004025)
`
`N. Abramson, “THE ALOHA SYSTEM—Another alternative
`for computer communications,” Proceedings of the Fall Joint
`Computer Conference, pp. 281-5, Nov. 1970
`
`3GPP TS 25.213 V6.4.0 (2005-09), “3rd Generation
`Partnership Project; Technical Specification Group Radio
`Access Network; Spreading and modulation (FDD) (Release
`6)”
`
`3GPP TS 25.211 V6.6.0 (2005-09), “3rd Generation
`Partnership Project; Technical Specification Group Radio
`Access Network; Physical channels and mapping of transport
`channels onto phys-ical channels (FDD) (Release 6)”
`
`D.C. Chu, “Polyphase codes with good periodic correlation
`properties,” IEEE Trans. Information Theory, vol. 18, pp. 531–
`532, July 1972
`
`3GPP TS 25.201 V3.0.0 (1999-10), “3rd Generation
`Partnership Project; Technical Specification Group Radio
`Access Network; Physical layer - General description (3G TS
`25.201 version 3.0.0)”
`
`3GPP TS 36.211 V8.0.0 (2007-09), “3rd Generation
`Partnership Project; Technical Specification Group Radio
`Access Network; Evolved Universal Terrestrial Radio Access
`(E-UTRA); Physical channels and modulation (Release 8)”
`
`“Defendants’ Preliminary Identification of Terms Needing Con-
`struction and Proposed Constructions,” from Case Nos. 15-542-
`SLR-SRF, 15-543-SLR-SRF, 15-544-SLR-SRF, 15-545-SLR-
`SRF, 15-546-SLR-SRF, 15-547-SLR-SRF filed in N.D. Del.
`
`“Evolved Wireless’s Identification of Claim Terms and
`Proposed Constructions” from Case Nos. 15-542-SLR-SRF, 15-
`543-SLR-SRF, 15-544-SLR-SRF, 15-545-SLR-SRF, 15-546-
`SLR-SRF, 15-547-SLR-SRF filed in N.D. Del.
`
`iv
`
`

`
`Ex. 1025
`
`Ex. 1026
`
`Ex. 1027
`
`Ex. 1028
`
`Ex. 1029
`
`Ex. 1030
`
`Ex. 1031
`
`Ex. 1032
`
`IPR of U.S. Patent No. 7,746,916
`
`IEEE 802.16-2004 Standard, entitled “IEEE Standard for Local
`and Metropolitan Area Networks Part 16: Air Interface for
`Fixed Broadband Wireless Access Systems” (“IEEE802.16-
`2004”)
`
`Declaration of Mr. David Ringle for IEEE802.16-2004
`
`U.S. Patent No. 7,400,573 to Sundstrom et al. (“Sundstrom”)
`
`“Joint Claim Construction Statement,” filed on May 17th, 2016,
`from Case Nos. 15-542-SLR-SRF, 15-543-SLR-SRF, 15-544-
`SLR-SRF, 15-545-SLR-SRF, 15-546-SLR-SRF, 15-547-SLR-
`SRF filed in N.D. Del.
`
`U.S. Patent No. 7,701,919 to Ah Lee (“Ah Lee”)
`
`U.S. Patent No. 7,693,924 Cho et al. (“Cho”)
`
`Motorola, Inc. 2004 Annual Report to Stockholders
`
`WCDMA for UMTS: Radio Access for Third Generation Com-
`munications, Holma and Toskala, 3rd ed, Wiley and Sons, Ltd.,
`2004
`
`v
`
`

`
`IPR of U.S. Patent No. 7,746,916
`
`ZTE (USA) Inc., Samsung Electronics Co., Ltd., Samsung Electronics
`
`America, Inc., HTC Corporation, and HTC America, Inc. (collectively,
`
`“Petitioner”) petition for Inter Partes Review (“IPR”) under 35 U.S.C. §§ 311–319
`
`and 37 C.F.R. § 42 of claims 1-10 (“the Challenged Claims”) of U.S. Patent No.
`
`7,746,916 (“the ‘916 patent”). As explained below, there exists a reasonable
`
`likelihood that Petitioner will prevail in demonstrating unpatentability of at least
`
`one of the Challenged Claims based on teachings set forth in the references
`
`presented in this petition.
`
`This petition is identical in substance to the petition that Apple Inc. et al.
`
`filed on June 20, 2016 in IPR2016-01209 (“the Apple proceeding”), as this petition
`
`is limited to the same claims, grounds, arguments, and evidence presented in the
`
`Apple proceeding. Petitioner will seek joinder with the Apple proceeding under 35
`
`U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b).
`
`I.
`
`Mandatory Notices Under 37 C.F.R § 42.8(A)(1)
`
`A.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`ZTE Corporation, ZTE (USA) Inc., Samsung Electronics Co., Ltd., Samsung
`
`Electronics America, Inc., HTC Corporation, and HTC America, Inc. are the real
`
`parties-in-interest.
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`The ‘916 patent is the subject of Civil Action Numbers 1:15-cv-00542
`
`(Del.), 1:15-cv-00543 (Del.), 1:15-cv-00544 (Del.), 1:15-cv-00545-SLR (Del.),
`
`1
`
`

`
`IPR of U.S. Patent No. 7,746,916
`
`1:15-cv-00546 (Del.), and 1:15-cv-00547 (Del.). Concurrently with this petition,
`
`Petitioner is filing one other petition for IPR (Proceeding No. IPR2016-01277) of
`
`the ‘916 Patent. The relationship between the limited grounds presented in these
`
`two petitions is discussed in Section VI.
`
`The ‘916 patent is also the subject of inter partes review proceeding nos.
`
`IPR2016-01208 and IPR2016-01209.
`
`C.
`
`Lead And Back-Up Counsel And Service Information
`
`Petitioner designates Charles M. McMahon (Reg. 44,926) as Lead Counsel,
`
`and designates Hersh H. Mehta (Reg. 62,336), James M. Glass (Reg. 46,729),
`
`Kevin P.B. Johnson (Reg. 38,927), Todd M. Briggs (Reg. 44,040), John McKee
`
`(Reg. 65,926), Stephen Korniczky (Reg. 34,853), Martin Bader (Reg. 54,736), and
`
`Ericka Jacobs Schulz (Reg. 60,665) as Backup Counsel. Petitioner consents to
`
`service by e-mail. Please send all correspondence to lead and back-up counsel at
`
`the addresses provided in the signature block of this petition.
`
`II.
`
`Payment Of Fees – 37 C.F.R. § 42.103
`
`Petitioner authorizes the Patent and Trademark Office to charge Deposit
`
`Account No. 50-0417 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and
`
`further authorizes payment for any additional fees to be charged to this Deposit
`
`Account.
`
`2
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`

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`IPR of U.S. Patent No. 7,746,916
`
`III. Requirements For IPR Under 37 C.F.R. § 42.104
`
`A.
`
`Grounds for Standing Under 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ‘916 Patent is available for IPR. The present
`
`petition is being filed within one year of service of each of the complaints against
`
`Petitioner. Petitioner is not barred or estopped from requesting this review on the
`
`below-identified grounds.
`
`B.
`
`Challenge Under 37 C.F.R. § 42.104(b) and Relief Requested
`
`Petitioner requests an IPR of the Challenged Claims on the grounds set forth
`
`in the table shown below, and requests that each of the Challenged Claims be
`
`found unpatentable. An explanation of unpatentability under the statutory grounds
`
`identified below is provided in the form of detailed description that follows,
`
`indicating where each element can be found in the cited prior art, and the relevance
`
`of that prior art. Additional explanation and support for each ground of rejection is
`
`set forth in Ex. 1003, Declaration of Dr. Jonathan Wells (“Wells Declaration”).
`
`Ground
`
`‘916 Patent Claims
`
`Basis for Rejection
`
`Ground 1 Claims 1-3, 5-8, and 10
`
`§102: Zhuang175
`
`Ground 2 Claims 4 and 9
`
`§103: Zhuang175 and Popovic
`
`Ground 3 Claims 1-3, 5-8, and 10
`
`§103: Zhuang175 and Hou
`
`Ground 4 Claims 4 and 9
`
`§103: Zhuang175, Hou and Popovic
`
`Ground 5 Claims 6-8, and 10
`
`§103: Zhuang175 and Fukuta
`
`3
`
`

`
`Ground 6 Claim 9
`
`§103: Zhuang175, Fukuta and Popovic
`
`IPR of U.S. Patent No. 7,746,916
`
`Zhuang175 qualifies as prior art under 35 U.S.C § 102 (e). Specifically,
`
`Zhuang175 (Ex. 1012) was filed on Mar 30, 2004, which is before the U.S. filing
`
`date of November 28, 2006 of the ‘916 Patent and any of the proclaimed priority
`
`dates of November 28, 2005, July 4, 2006, and July 7, 2006. The Pre-Grant
`
`Publication of Zhuang175 (US20050226140 A1) is a 102(b) reference, published
`
`Oct 13, 2005, more than one year before the U.S. filing date of the ‘916 Patent.
`
`Popovic qualifies as prior art under 35 U.S.C § 102 (b). Specifically,
`
`Popovic (Ex. 1009) is a journal article that was published in IEEE Trans. On
`
`Information Theory, vol. 38 in July, 1992. Popovic is a publication published more
`
`than a decade before both the U.S. filing date of November 28, 2006 of the ‘916
`
`Patent and the proclaimed priority dates of November 28, 2005, July 4, 2006, and
`
`July 7, 2006. See Ex. 1010.
`
`Fukuta qualifies as prior art under 35 U.S.C § 102 (e). Specifically, Fukuta
`
`(Ex. 1013) is a patent publication that was filed on May 18, 2006. Therefore,
`
`Fukuta is a patent publication based on an application that was filed before the
`
`U.S. filing date of November 28, 2006 of the ‘916 Patent. While Fukuta was filed
`
`after the earliest proclaimed priority date of November 28, 2005, the ‘916 Patent is
`
`not entitled to that priority date for the reasons noted in Section IV-C below.
`
`4
`
`

`
`IPR of U.S. Patent No. 7,746,916
`
`Hou qualifies as prior art under 35 U.S.C § 102 (e). Specifically, Hou (Ex.
`
`1011) is a patent that was filed on July 27, 2005. Therefore, Hou is a patent that
`
`issued on an application that was filed before the U.S. filing date of November 28,
`
`2006 of the ‘916 Patent and the proclaimed priority dates of November 28, 2005,
`
`July 4, 2006, and July 7, 2006.
`
`C.
`
`Claim Construction under 37 C.F.R. §§ 42.104(b)(3)
`
`A claim subject to IPR is given its “broadest reasonable construction in light
`
`of the specification of the patent in which it appears.” 37 C.F.R. § 42.100(b). For
`
`purposes of this proceeding only, Petitioner submits constructions for the following
`
`terms. Petitioner submits that the remaining claim terms need not be construed at
`
`this time.
`
`1.
`
`“acquiring/generating a code sequence having a second
`length by a cyclic extension of a code sequence having a first
`length” (claims 1 and 6)
`
`For purposes of this proceeding, the broadest reasonable interpretation (BRI)
`
`of the phrase “acquiring/generating a code sequence having a second length by a
`
`cyclic extension of a code sequence having a first length” is broad enough to
`
`encompass “acquiring/generating a code sequence having a second length through
`
`execution of one or more operations that include performing a cyclic extension of a
`
`code sequence having a first length.” See Wells Declaration, ¶¶ 82-85. Such a
`
`construction is consistent with the ‘916 Patent because: 1) the ‘916 Patent
`
`5
`
`

`
`IPR of U.S. Patent No. 7,746,916
`
`specification does not specifically define this term; and 2) the plain and ordinary
`
`meaning of “acquire” is “to gain possession of;” the plain and ordinary meaning of
`
`“generate” is “to bring into being; give rise to;” and the plain and ordinary
`
`meaning of “by” is “with the use or help of, through.” See Ex. 1005 at 15, 732,
`
`255. All of these terms are open-ended, especially the definition of “by”, and
`
`embrace, if not imply, that the acquisition/generation could involve other “use or
`
`help” besides “a cyclic extension” that immediately follows the term “by.”
`
`Moreover, the claim language fails to limit the claim element to “acquiring...
`
`only by a cyclic extension,” and the ‘916 Patent specification fails to disclaim or
`
`exclude other operations being performed for “acquiring/generating a code
`
`sequence having a second length.” Accordingly, the broader construction should be
`
`adopted, rather than reading the word “only”—a word the Applicant did not use—
`
`into the term. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
`
`Therefore, the BRI of the phrase “acquiring/generating a code sequence
`
`having a second length by a cyclic extension of a code sequence having a first
`
`length” is broad enough to encompass “acquiring/generating a code sequence
`
`having a second length through execution of one or more operations that include
`
`performing a cyclic extension of a code sequence having a first length.”
`
`6
`
`

`
`IPR of U.S. Patent No. 7,746,916
`
`2.
`
`“cyclic prefix” (claims 2 and 7)
`
`For purposes of this proceeding, the BRI of the term “cyclic prefix” is broad
`
`enough to encompass “a portion of a sequence that includes the last one or more
`
`elements of the sequence and is appended to the front of the sequence.” See Wells
`
`Declaration, ¶¶ 86-90. The ‘916 Patent specification fails to specifically define the
`
`term “cyclic prefix.” However, a person of ordinary skill in the art at the time of
`
`the invention (POSITA) would recognize that the term “cyclic prefix” is a
`
`technical term well-known in the art, especially in the context of wireless
`
`communications. See e.g., “[a]s is well known, a cyclic prefix for a block of N
`
`data samples is created by copying the last L samples of the block of N data
`
`samples and appending them to the front of the block of N data samples.” Ex.
`
`1006, 5:64-6:3.
`
`Such a construction is consistent with the ‘916 Patent specification: “a code
`
`sequence portion is added/attached to the generated code sequence (e.g., zero-
`
`padding or cyclic prefix).” Ex. 1001, 10:37-39. “The length of the padding portion
`
`corresponds to a length L−X. As discussed, the padding portion can be comprised
`
`of zeroes or cyclic prefix/postfix;” see also Ex. 1001, 12:43-47, 12:60-67. The
`
`‘916 Patent specification also contrasts the “cyclic prefix” with “cyclic postfix,”
`
`where the latter is “the portion corresponding to L−X of the code sequence 1204
`
`[that] can be duplicated and inserted/attached to the end of the code sequence
`
`7
`
`

`
`IPR of U.S. Patent No. 7,746,916
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`1204.” Ex. 1001, 13:53-57 and 62-64. A POSITA in view of the ‘916 Patent
`
`specification would have recognized that, rather than the end of the sequence, the
`
`“cyclic prefix” is a portion of a sequence that includes the last one or more (e.g., L-
`
`X) elements of the sequence and is appended to the front of the sequence. See
`
`Wells Declaration, ¶¶ 89-90.
`
`3.
`
`“cyclic postfix” (claims 2, 3 and 7)
`
`For purposes of this proceeding, the BRI of the term “cyclic postfix” is
`
`broad enough to encompass “a portion of a sequence that includes the first one or
`
`more elements of the sequence and is appended to the end of the sequence.” See
`
`Wells Declaration, ¶¶ 91-93. Such a construction is consistent with the ‘916 Patent
`
`specification: “the padding portion can be comprised of a repeated portion. In other
`
`words, the portion corresponding to L−X of the code sequence 1204 can be
`
`duplicated and inserted/attached to the end of the code sequence 1204. This can be
`
`referred to as cyclic postfix.” Ex. 1001, 13:53-57, 12:43-47, 60-67.
`
`4.
`
`“reference signal sequence” (claims 5 and 10)
`
`For purposes of this proceeding, the BRI of the term “reference signal
`
`sequence” is broad enough to encompass “a sequence transmitted for the purpose
`
`of initial synchronization, cell search, or channel estimation.” See Wells
`
`Declaration, ¶¶ 94-95. Such a construction is consistent with the ‘916 Patent
`
`specification: “a pilot signal or a preamble of a wireless communication system is
`
`8
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`

`
`IPR of U.S. Patent No. 7,746,916
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`referred to as a reference signal used for initial synchronization, cell search, and
`
`channel estimation.” Ex. 1001, 1:20-22.
`
`5.
`
`“a code sequence generator” (claim 6)
`
`Claim 6 recites “a code sequence generator for generating a code sequence
`
`having a second length by cyclic extension of a code sequence having a first
`
`length, and performing a circular shift to the code sequence having the second
`
`length.” This term does not include the word “means.” Thus, the term
`
`“presumptively is not a means-plus-function limitation under 35 U.S.C. § 112,
`
`paragraph 6.” See Facebook v. TLI Comm., Case IPR2015-00778, Paper No. 17,
`
`pp. 13-14 (P.T.A.B. August 28, 2015) (citing Williamson v. Citrix Online, LLC,
`
`792 F. 3d 1339 (Fed. Cir. 2015) (en banc)). Petitioner has challenged this
`
`presumption in District Court (see Ex. 1023, p. 4; Ex. 1028, p. 8), but is not
`
`challenging it in this proceeding, in part because PTO proceedings have a broader
`
`standard of interpretation than in litigation. See In re Zletz, 13 USPQ2d 1320, 1322
`
`(Fed. Cir. 1989) (explaining that for PTO proceedings, the BRI-standard should be
`
`used, in part due to the ability of the Patent Owner to amend claims to further
`
`clarify their scope). Accordingly, for purposes of this proceeding only, the term
`
`should be given its plain meaning as understood under the BRI standard.
`
`The Patent Owner has asserted in the District Court that this term is not
`
`governed by 35 U.S.C. § 112(6). See Ex. 1024, p. 2; Ex. 1028, p. 8. However, to
`
`9
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`

`
`IPR of U.S. Patent No. 7,746,916
`
`the extent that the Patent Owner alleges in this proceeding that the term is a means-
`
`plus-function limitation, the Patent Owner may identify the following portions of
`
`the specification as relating to structure for performing the recited functions
`
`“generating a code sequence ...and performing a circular shift ...”: the sequence
`
`selection unit 1602 of FIG. 16. See e.g., Ex. 1001, 15:12-35.
`
`Regardless of whether “code sequence generator” is given its plain meaning
`
`or is governed by 35 U.S.C. § 112(6), the ‘916 Patent does not limit the recited
`
`code sequence generator to a unitary device. See, e.g., Ex. 1001, 15:6-35.1 See
`
`Wells Declaration, ¶¶ 96-99. For example, in describing FIG. 16, the ‘916 Patent
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`states that, “[d]epending on whether the transmission of the code sequence is made
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`1 The recitation of the term “apparatus” in the preamble also does not limit
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`the recited features of claim 6 to a unitary device. The ‘916 Patent does not
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`specially define the term “apparatus,” and this term has been construed as
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`generally encompassing a “system.” See Ex Parte Fressola, 27 U.S.P.Q.2D (BNA)
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`1608, 1611 (B.P.A.I. 1993) (citing In re Walter, 618 F.2d 758, 762 n.2 (CCPA
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`1980)). The term “apparatus” merely gives a descriptive name to the set of
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`limitations in the body of the claim, but does not otherwise limit the scope of the
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`claim. See IMS Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434
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`(Fed. Cir. 2000).
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`10
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`IPR of U.S. Patent No. 7,746,916
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`in a downlink direction or an uplink direction, the structure can be in different
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`form.” Ex. 1001, 15:7-9. In this regard the example implementation shown in FIG.
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`16 is not limiting. In fact, the ‘916 patent admits that “FIG. 16 is described with
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`respect to a general transmitting end for 10 transmitting the control signal,” Ex.
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`1001, 15:9-11. Moreover, FIG. 16 merely shows that “the transmitting end 1601
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`comprises a sequence selection unit 1602 and a transmitting unit 1603.” Ex. 1001,
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`15:12-13. The ‘916 Patent generally describes that “[t]he sequence selection unit
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`1602 is used to generate the code sequence for transmitting the control
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`information,” without further design or configuration restraints. See Ex. 1001,
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`15:6-35.
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`6.
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`“a transmitting unit” (claim 6)
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`Claim 6 recites “a transmitting unit for transmitting the circular shifted code
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`sequence having the second length.” This term does not include the word “means.”
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`Thus, the term “presumptively is not a means-plus-function limitation under 35
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`U.S.C. § 112, paragraph 6.” See Facebook, Paper No. 17 at 13-14. Petitioner has
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`challenged this presumption in District Court (see Ex. 1023, p. 4; Ex. 1028, p. 9),
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`but is not challenging it in this proceeding, in part because PTO proceedings have a
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`broader standard of interpretation than in litigation. See In re Zletz at 1322.
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`Accordingly, for purposes of this proceeding only, the term should be given its
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`plain meaning as understood under the BRI standard.
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`11
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`IPR of U.S. Patent No. 7,746,916
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`The Patent Owner has asserted in the District Court that this term is not
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`governed by 35 U.S.C. § 112(6). See Ex. 1024, p. 2; Ex. 1028, p. 9. However, to
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`the extent that the Patent Owner alleges the term is a means-plus-function
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`limitation, the Patent Owner may identify the following portions of the
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`specification as relating to structure for performing “transmitting the circular
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`shifted code sequence having the second length”: the transmitting unit 1603 of
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`FIG. 16. Ex. 1001, 15: 1314.
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`IV.
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`Summary Of The ‘916 Patent
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`A.
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`Brief Description
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`Generally, the ‘916 Patent purportedly provides a method of generating a
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`code sequence in a wireless communication system. Ex. 1001, Abstract.
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`Particularly, the ‘916 patent describes generating a code sequence having a length
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`different from a desired length, and modifying the length of the generated code
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`sequence to equal the desired length. Ex. 1001, 2: 8-12. The step of modifying
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`includes inserting a “cyclic prefix/postfix.” Ex. 1001, 13:23-25. The ‘916 Patent
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`also discusses a circular shift that is “typically applied to increase an amount of
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`control information” and “performed either before or after the padding portion is
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`added to the generated CAZAC sequence.” Ex. 1001, 11: 22-25 and 13:8-10.
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`FIG. 13 (reproduced below) illustrates “application of circular shift to the
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`generated code sequence after a padding portion is attached.” Ex. 1001, 12:37-39.
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`12
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`IPR of U.S. Patent No. 7,746,916
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`Specifically, a code sequence 1302 is generated with a length X which is the
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`largest prime number smaller than a desired length L. A padding portion of a
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`length L−X is added to the CAZAC sequence 1302. The “result of the generated
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`code sequence having length L 1303 is applied circular shift thereto, resulting in
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`the CAZAC sequence 1304.” See Ex. 1001, 12:40-49.
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`13
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`

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`IPR of U.S. Patent No. 7,746,916
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`The ‘916 patent includes 11 claims, of which claims 1, 6 and 11 are independent.
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`Claims 1 and 6 are directed towards the implementation as shown in FIG. 13.
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`B.
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`Summary of the Prosecution History
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`In the first office action issued during original prosecution of the ‘916 Patent
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`and dated June 26, 2009, the Examiner set forth rejections based on Zhuang175
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`and a combination of Zhuang175 in view of Koslar. See Ex. 1002 at 120-127.
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`Given that Zhuang175 unequivocally discloses the “cyclic extension” feature, the
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`Applicant resorted to rolling up dependent claims 27 and 28, which recited the
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`“circular shift” feature, into independent claim 1, arguing that the circular shift is
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`not disclosed in “the cited portions of Zhuang175” in the first Office Action. See
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`Ex. 1002 at 113-115. Admittedly, the cited portion of Zhuang175 discloses cyclic
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`extension not circular shift (“Choose NG to be the largest prime number that is
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`smaller than Np and generate the sequence set. Repeat the beginning elements of
`
`each sequence in the set to append at the end to reach the desired length Np.” Ex.
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`1012, 4:18-21). However, in an entirely different and uncited portion, Zhuang175
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`explicitly discloses circular shifting: “the actual signals may be the results of
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`different functions of the same assigned sequence. Examples of the functions
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`applied are circular shifting of the sequence....” Ex. 1012, 6:29-32. Unfortunately,
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`because the applicant failed to point to the most relevant portions of the reference
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`and made misleading statements, the Examiner overlooked this very express
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`14
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`IPR of U.S. Patent No. 7,746,916
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`disclosure of Zhuang175 and issued a notice of allowance relying on the
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`Applicant’s argument, which itself asserts nothing more than that the cited portions
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`of Zhuang175 did not disclose the circular shift feature. See Ex. 1002, 79-84.
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`C.
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`The Effective Priority Date of the Claims of the ‘916 Patent
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`The ‘916 patent issued from U.S. Application No. 11/563,909, filed
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`November 28, 2006. This application claims priority to Korean application nos.
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`10-20050114306 filed November 28, 2005, 10-2006-0062467 filed July 4, 2006
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`and 102006-0064091 filed July 7, 2006. Petitioner notes that the claims ultimately
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`granted in the ‘916 patent are not fully supported by the priority application2; the
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`earliest effective filing date for those claims is thus no earlier than July 7, 2006.
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`V. Manner Of Applying Cited Prior Art To Every Claim For Which An
`IPR Is Requested, Thus Establishing A Reasonable Likelihood That At
`Least One Claim Of The ‘916 Patent Is Unpatentable
`
`This request shows how the primary references above, alone or in
`
`combination with other references, disclose the limitations of and thereby
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`2 The Korean application filed November 28, 2005 does not support any of the
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`claims of the ‘916 Patent because it is silent at least on “cyclic extension” and
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`“cyclic shift” features as recited in the claims of the ‘916 Patent. See Ex. 1015. The
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`Korean application filed July 4, 2006 does not support any of the claims of the
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`‘916 Patent because it is silent at least on the “cyclic shift” feature as recited in the
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`claims of the ‘916 Patent. See Ex. 1016.
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`15
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`invalidating the Challenged Claims. As detailed below, this request shows a
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`reasonable likelihood that the Requester will prevail with respect to the Challenged
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`IPR of U.S. Patent No. 7,746,916
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`Claims.
`
`Ground 1: Zhuang175 anticipates claims 1-3, 5-8, and 10
`A.
`Zhuang175 discloses “a method and apparatus for pilot signal
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`transmission.... In particular, pilot sequences are constructed from distinct
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`“classes” of chirp sequences that have an optimal cyclic cross correlation property
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`while satisfying the ideal cyclic auto-correlation requirement. Utilization of chirp
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`sequences for pilot sequences results in pilot channels that have good cross
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`correlation as well as having good auto-correlation.” Ex. 1012, 2:22-29. See also
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`Wells Declaration, ¶¶ 222-230. FIG. 3 (reproduced below) shows a method of
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`“assignment of pilot codes to various base units.” Ex. 1012, 8:52-53.
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`16
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`IPR of U.S. Patent No. 7,746,916
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`Zhuang175 explains: at step 301, “a number of needed pilots (K), desired
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`pilot length (Np) and a candidate length (NG) of each pilot sequence are
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`determined;” at step 303, “[b]ased on Np and NG, the pilot sequences are
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`computed[;] the pilot sequences are constructed from the Generalized Chirp-Like
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`(GCL) sequences of length Np.... at step 305, the pilot sequences are assigned to
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`base units within communication system 100... each base unit may receive more
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`than one pilot sequence from the K available pilot sequences.” Ex. 1012, 8:52-64.
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`Corresponding to step 303, the Section entitled “Construction of a Set of
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`Pilot Sequences to Use within a Communication System” discloses that “the pilot
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`17
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`IPR of U.S. Patent No. 7,746,916
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`sequence will be constructed by starting with a sequence whose length NG is a
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`prime number and then performing modifications” that include “[choosing] NG to
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`be the largest prime number that is smaller than Np and generate the sequence set.
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`Repeat the beginning elements of each sequence in the set to append at the end to
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`reach the desired length Np.” See Ex. 1012, 3: 64-4:21. Notably, Zhuang175
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`makes clear that “[f]urther modifications to the truncated/extended sequences may
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`also be applied.” Ex. 1012, 4:44-46.
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`Corresponding to step 305, the Section entitled “Assignment of Pilot
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`Sequences within a Communication System” discloses that each communication
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`unit can be assigned a different or same pilot sequence “from the set of K pilot
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`sequences” and “different functions [can be applied to] the same assigned
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`sequence. Examples of th